Ex Parte Hartley

Board of Patent Appeals and Interferences

Jun 10, 2005

08183354 (B.P.A.I. Jun. 10, 2005)

Interferences 105,257 through 105,260 are related. Hartley application1
08/183,345 is involved in each of the interferences.
Paper 22
Filed by: Merits Panel
Mail Stop Interference Filed
P.O. Box 1450 June 10, 2005
Alexandria Va 22313-1450
Tel: 571-272-9797
Fax: 571-273-0042
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
RODNEY M. RICHARDS,
THEODORE JONES, DAVID L. SNITMAN,
and GREGORY S. BROWN
Junior Party
(Patent 5,427,929),
v.
JAMES L. HARTLEY
Senior Party
(Application 08/183,354).
_______________
Patent Interference No. 105,2571
_______________
Before SALLY GARDNER LANE, SALLY C. MEDLEY, and JAMES T. MOORE,
Administrative Patent Judges.
LANE, Administrative Patent Judge.
Judgment - Merits- Bd.R. 127
The joint motion for a judgment of no interference-in-fact has been GRANTED.
(Paper 21).
Richards has statutorily disclaimed certain of its patent claims. Hartley has
2
cancelled all of its pending application claims and has presented new claims 76-86
which do not interfere in fact with the remaining claims of the Richards patent. While
claims 76-86 shall be entered into Hartley’s 08/183,354 application, there has been no
determination made that these claims are patentable to Hartley. As we noted in our
decision on the joint motion (Paper 21 at 12),
Our decision to allow Hartley to add new claims to its application
should not be construed as a determination that these new claims are
patentable to Hartley. For example, we note that certain of Hartley’s new
claims, e.g., claims 82 [footnote omitted] through 86, appear to be of
broader scope than the claims involved in the interferences. These new
claims may be thoroughly examined upon the resumption of ex parte
prosecution. It is appropriate to return the Hartley application.
Upon consideration of the record and for reasons given, it is
ORDERED that there is no interference-in-fact between claims 3-18 of Richards’
involved patent 5,427,929 and claims 76-86 of Hartley’s involved application
08/183,354.
FURTHER ORDERED that the Clerk is authorized to enter the Richards statutory
disclaimer filed with the joint motion (Paper 19 at Joint Exhibit 8).
FURTHER ORDERED that the Clerk is authorized to enter the Hartley
amendment filed May 24, 2005 (Paper 20).
FURTHER ORDERED that Richards is not entitled to a patent containing claims
1, 2, and 19-21 of patent 5,427,929.
FURTHER ORDERED that Hartley is not entitled to a patent containing claims
47-53, 56-72, 74 and 75 of application 08/183,354, filed January 19, 1994.
3
FURTHER ORDERED that if there is a settlement agreement, the parties are
directed to 35 USC 135(c) and 37 CFR 41.205.
FURTHER ORDERED that a copy of this judgment shall be given a paper
number and entered into the administrative records of Richards patent 5,427,929 and
Hartley application 08/183,354.
10 June 2005
Alexandria, VA
cc (via first class mail):
Attorney for Richards:
Michael J. Wise
PERKINS COIE LLP
1620 26 Streetth
6 Floor, South Towerth
Santa Monica, CA 90404-4013
Tel: 310-788-3210
Fax: 310-788-3399
Attorney for Hartley:
Judith U. Kim
STERNE, KESSLER, GOLDSTEIN & FOX PLLC
1100 New York Avenue, N.W.
Washington, DC 20005-3934
Tel: 202-371-2600
Fax: 202-371-2540